Coordinating Post-Grant Patent Opposition in Europe and the U.S.

Navigating Timing, Grounds for Opposition, Discovery, and Amendments to Maximize Protection in Both Jurisdictions

Recording of a 90-minute CLE webinar with Q&A


Conducted on Thursday, February 26, 2015

Recorded event now available

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Program Materials

This CLE webinar will provide patent counsel with guidance for addressing post-grant patent oppositions in both Europe and the U.S. The panel will offer best practices for navigating the two systems to maximize patent protection in both jurisdictions.

Description

Two years into the new patent system under the AIA, the USPTO has had over 1,700 petitions for inter partes review (IPR) submitted to challenge the patentability of an issued patent. In Europe, oppositions have long been used to challenge patents. Many inventions are protected by closely related patents in the U.S. and Europe.

As a result, patent owners need to address the prospect of coordinating their post-grant patent challenges or defenses to challenges in both jurisdictions. Among the obstacles facing patent counsel is the timing of filings. While oppositions at the European Patent Office (EPO) must be filed within nine months, a patent owner may be subject to an IPR challenge long after that timeframe.

Other potential stumbling blocks or influences on how and where a patent is challenged include the grounds for challenging patents, the fees for each venue, win rates, discovery, amendments and litigation estoppel. Patent counsel must be able to navigate the complex procedures of the USPTO and the EPO to maximize patent protection.

Listen as our authoritative panel of patent attorneys examines key similarities and differences between European and U.S. post-grant proceedings. The panel will compare likely timelines and offer ways to maintain consistent positions while using the actions in one jurisdiction to help in the other.

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Outline

  1. European and U.S. proceedings
    1. Key similarities
    2. Key differences
  2. Timelines
  3. Maintaining consistent positions while leveraging the procedures in each jurisdiction to maximize protection

Benefits

The panel will review these and other key issues:

  • What are the grounds for opposing a patent in the U.S. and how do they differ from those in Europe?
  • How will the differences relating to discovery and the use of expert testimony impact opposition strategy?
  • What strategies should counsel employ to coordinate post-grant patent oppositions in Europe and the U.S.?

Faculty

Michael J. Flibbert
Michael J. Flibbert

Partner
Finnegan Henderson Farabow Garrett & Dunner

Mr. Flibbert has extensive experience in all aspects of patent law, focusing on district court litigation, appeals, and...  |  Read More

Leythem A. Wall
Leythem A. Wall

European Patent Attorney
Finnegan Europe

Mr. Wall’s practice involves patent drafting, prosecution, opinions on infringement and validity,...  |  Read More

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